News & insights
UAE: Anti-Counterfeiting Laws and Practice
July 25, 2013
The UAE has recently grown increasingly important as a consumer market, becoming a major hub for regional and global trade. With a developing economy comes the apparent increase both in the volume and types of counterfeit and infringing products trafficked in and through the country. It is difficult to estimate with any precision the extent of counterfeiting that takes place in UAE. However, it certainly appears that there are significant efforts in the country to address this problem at its roots.
1. Anti-Commercial Fraud Law: A new draft Anti-Commercial Fraud Law was endorsed in January 2013 by the Cabinet in the UAE. The draft law replaces the Anti-Commercial Fraud Law of 1979 and adds to the existing enforcement mechanisms related to trademark rights.
2. Trademark Law: The UAE Trademark Law (no. 8 of 2007) contains a handful of procedural provisions that can be used to address infringement and counterfeiting. The extent to which a trademark owner may prevent unauthorized use of trademarks which are the same as or similar to its trademark depends on various factors such as whether the trademark is registered, the similarity of the trademarks involved, the similarity of the products or services involved, and whether the owner’s trademark is well known. If a trademark has been registered, then it is much easier in the UAE for the trademark owner to demonstrate its trademark rights and to enforce these rights through an infringement action. For trademarks which are considered to be well known, infringing use may occur where the use is in relation to products or services which are not the same as or similar to the products or services in relation to which the owner’s mark is registered (Article 4 of Law no. 8 of 2007).
3. Border Measures: Border measures are always a key tool in the fight against counterfeiting and a critical element of a successful intellectual property enforcement system. In the scope of the continuous efforts to create competent border enforcement measures and to provide effective protection, the Customs in UAE (Dubai, Sharjah, Ras Al Khaimah, and soon in Abu Dhabi) have established a trademark recordation system for registered trademarks. This system is undoubtedly helping Customs officials target, intercept, and confiscate shipments of infringing goods.
One fundamental premise of the recordation system (other than providing a central registry containing information for recorded trademarks) is that it allows Customs officials to adopt an ex-officio border system. An ex-officio system is different from the standard border system in which a judicial authority orders Customs to detain the infringing shipment after identifying the infringing goods. The key advantage of the ex-officio system is that it allows for prompt and proactive action by Customs officials thus avoiding the delays inherently involved in seeking judicial action. Customs officials are always on the lookout for infringing goods and are thus able to act quickly to confiscate counterfeit and pirated merchandise.
4. Injunction: Since in most counterfeiting and infringement cases the main goal of the intellectual property rights owner is to immediately stop the damaging activity, an interlocutory or pre-trial injunction is usually the most desirable remedy. Under the UAE law, an intellectual property rights owner can obtain an interlocutory injunction by showing that (a) there is a serious issue to be tried, (b) damages will not provide adequate compensation for the harm to be suffered, and (c) the balance of convenience favors granting an injunction.
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